Thursday, January 23, 2020

The Impact of Trademarks Act 2019

Malaysia Trademarks Act 2019 is now in force since 27 Dec 2019 and Trade Marks Act 1976 is repealed. In Asia, the American spelling of trademarks is favoured over the British spelling of trade marks.  Several international trademark practices were adopted in the new Act. Here, we highlight several impact of Trademarks Act 2019.

1.       Scope of mark
The scope of qualifying mark is expanded to shape of goods, sound, scent, hologram, positioning, and sequence of motion. Shape of goods is also known as 3D mark. To qualify as a trademark, the shape must be distinctive in that it is not a result of the nature of the goods, eg. Toblerone chocolate. Example of distinctive sound marks include 20th Century Fox fanfare.
Example of shape of goods - Toblerone chocolate (Image: Wikepedia)

2.       Qualifying mark
Trademark means any sign capable of distinguishing goods or services of one source from another source. The applicant must use or has intention to use the mark. Description of goods or services should accurately be described. Non-use of mark can be revoked.

3.       One step application process
The previous two step application process of filling and publication (after approval) is streamlined into a single step. The applicant has to pay the publication fee upon filling.

4.       Non-distinctive mark application to receive refusal (Absolute grounds of refusal)
A refusal is issued if the examiner finds that the mark describes kind, quality, quantity, intended purpose, value, geographical origin, characteristics of goods or services or time of production or rendering of services.

5.       Similar mark application to receive refusal (Relative grounds of refusal)
A refusal is issued if the examiner finds that the mark is similar with earlier trademark which comprises registered trademark, pending trademark or well-known trademark. Well-known trademark means any trademark that is well known in Malaysia.

6.       Registered trademarks as object of property
Registered owners can use the mark, authorize other person to use the mark, use the mark as a security interest and obtain relief for infringement.  

7.       One step international application process
After registering a trademark in Malaysia, the owner can file the trademark in multiple countries of Madrid Protocol in a single application. The owner can possibly save cost in filling the mark in multiple countries. The owner can also get double tax deduction for foreign trademark filling.

8.       Pending trademark applications
      Trademark applications filed before the implementation of Trademarks Act 2019 which are pending examination will be examined according to Trade Marks Act 1976.

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